Summary

Morocco is a member of the Paris Convention for the Protection of Industrial Property. The International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (10th edition) is followed in Morocco and the revision of class 42 with the creation of classes 43 to 45 has been adopted since January 1, 2002.

The Law No. 17.97 relating Industrial Property Law has been modified and supplemented by the new Law No. 23.13 and is in force since 18 December, 2014. The law to the protection of Industrial Property in Morocco has been modified and supplemented as mentioned below.

1.GENERAL PRINCIPLES

IP attorney practice regulation

New regulation has been settled in order to act as an IP attorney and provide IP services to the public (counseling, prosecution, managing, licensing).  

Are eligible to be IP attorneys, holders of a university degree from a Moroccan Higher Education Institution or holders of an equivalent degree (as recognized by Moroccan Authorities) in the technical, scientific or legal fields. 

Besides, the IP attorney should prove a previous professional experience of at least three continuous years in the field of IP. 

IP attorneys that meets the above cited requirements could be registered in the list of industrial property attorneys of the body responsible for industrial property. IP attorneys that are registered in the list do not need a power of attorney to act before the PTO except for operations regarding transfer/change or retrieval of an IP right. The said list should be established by the body responsible for industrial property within next few months. 

Certificates of addition

Certificates of addition are not applicable anymore since the entry of this new law. However this does not apply to current owners of certificate of additions application/title before the entry into application of this new law.

Priority rights

As available in the old law, any person who has effected a regular filing of an application in one of the countries of the International Union for the Protection of Industrial Property shall enjoy a priority right in Morocco. However, the applicant is now required, within a period of 4 months , instead of 3 months, from the date of the last day of the eldest claimed priority, to provide the documents proving the prior filing.  

Calculation of deadlines

The new law fixed the general way of calculation for all deadlines concerning IP rights. 

It should be taken into account that calculation of a deadline expressed “by year” or “by months”, the same should start from the next day of the expiry date and should end on the same day as the day of when the deadline started.  In case a day of a month does not exist in a month of the next year, than the last day of the expiry date is the same as it was in the previous year. 

In case of deadlines expressed by days, calculation should start from the next day of the expiry date.

Extension application operations

The new law stipulates that it is required to pay an extra fee to extend the procedure in case the time limits fixed in the current law regarding the fulfillment of the application operations for industrial property titles have not been met.  A motion to extend the procedure pertaining to the said operations may be initiated by the applicant or his representative at the body in charge of industrial property within a period of two months from the expiry date of the said deadlines.

However, no application for extension may be filed, if the specified deadlines are not met for the following:

- For which an application was filed to follow up the procedures or refund the fees;

- If it is related to payment of the prescribed fees for renewing the registration of an industrial design or model or a mark, or payment of the prescribed fees to maintain the validity of the patent rights;

- If it is related to opposition procedure pursuant to the provisions of Articles 148.2 to 148.5 of this Law ( deadlines for oppositions)

- According to Articles 8, 14.2, and 14.3 of this Law. ( Priority, filing observation against a decision, filing observations by third parties against a registration)


Examination/objection

The PTO performs with the entry of the new law substantive examination of Trademarks, Patents and Industrial Designs or Models, based on formal requirements and absolute grounds.  In case the PTO objects an application on absolute grounds, a two months period, calculated form the notification date, is allotted to the applicant to reply on the objection of the PTO.  

Besides, after the publication date, any third party may object a registration of an application based on relative grounds. If an objection is filed against an application, a two months period is allotted for the said applicant to respond. 

Restoration

The new regulation provide the opportunity to claim the restoration of a right in case the applicant or the owner of an IP right have a justified reason that made him not respect a deadline before the PTO, or in case of non-respect of the deadline occurred in the refusal, or the cancellation of a right or any other type of right. 

Competences of the Court

Any dispute arising from the application of the new law, with the exception of the administrative decisions and cases relevant to the criminal law, shall be heard by the commercial court.

2.PATENT

Requirements and conditions of patentability of an invention

Any invention in all technological fields is patentable when it is considered to be new, involves an inventive step and is susceptible of industrial application.

Schemes, rules and methods for playing games or doing business, and programs for computers shall not be regarded as inventions. However, patentable are inventions that requires implementations using computer information networks or device, or other programs and are available on the property or properties to reach all or a part of them by a program or computer programs and if the invention is carried out by a computer formula or technique.

Besides, methods for the treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body are not patentable. This rule does not apply to products particularly, substances and compounds that are used in methods/ processes as mentioned above. 

Moreover, varieties of plants or animals breeds as well as biological methods as used mainly for the production of plants or animals to choose breeds are not patentable. This does not apply to microbiological methods and products obtained by these methods. Varieties of plants, animals breeds and biological methods are applicable in case the owner can get a patent related to plant varieties and animal breeds, or if they are related to biological material isolated from the plant variety or animal breed or if produced in a technical manner, plants or animals, if the technical possibility, of the application of the invention to the specific plant species or specific animal breed is not limited, plant varieties, in case they are not the subject of an application for a certificate in accordance with the Plant Variety law.

An invention shall be considered to be new if it does not form part of the state of the art.  However, it is now also considered as part of the state of the art, when the content of the patent applications filed in Morocco, registered with a prior date to the one mentioned in the second paragraph of this article and which were published on that date or at a later date. Besides, an invention shall be considered inventive if, for a person skilled in the art, it is not derived in an obvious manner from the state of the art. Moreover, an invention is susceptible of industrial application if the invention has a utility, is convincing and credible.

In addition, an invention that concerns micro-organism that cannot be consulted by the public and if it cannot be described in such a way that it will be sufficient for a person skilled in the art to conceive it, will not be patentable except when it is filed with the micro- organism qualified body. 

Filing procedure of a patent application

According to the new law the claims that define the matter for which protection is sought must be clear, brief and based on the descriptions. The invention is considered to be sufficiently supported by information if the said information ensures that the person skilled in the art to understand that the applicant owns the invention at the time of filing.  Besides, the invention is considered to be sufficiently supported by information if the said information ensures that the person skilled in the art to understand that the applicant owns the invention at the time of filing.  

Divisional Application of a Patent

New regulation makes it possible to divide or limit the initial application of patents before paying the official fees.  

The PTO will ask the applicant or his agent to divide or limit the initial application, in case the patent application does not comply with the requirements of an application under this law. The applicant or his agent is allotted a 3 month period to divide this application, starting from the date of notification. 

The request to divide the application should not across the content of the claims under the initial application. Divided applications benefit from the filing date, and where appropriate, from the priority date of the initial application request, and they must be subject to the same conditions and formalities.

Rejection of a patent application

A patent application may now also be refused as a part.  The rejection of the application will only affect that part of the application. Those parts will be deleted when applicable from the descriptions and drawings.

A patent application can now also be refused among others, as part of the substantive examination, if it lacks novelty and inventive activities and if the amendments of the claims are modified in a way to change the substance of the original application. 

Preliminary search report 

The PTO is nowadays required to prepare a preliminary search report with an opinion on the grant of the patent, on the basis of the claims, descriptions and drawings, if any. The preliminary search report once prepared shall be notified to the applicant or his agent, including the title of the invention and summary of the invention as decided by the same body. The applicant has 3 months calculated from the date of notification of the report, to 

amend the claims based on the preliminary search report or if necessary defending the objected claims. The amendments of the claims should not change the substance of the original patent application. The final search report will be issued in accordance with the preliminary search report taking into consideration the last version of the amended claims and the arguments of the applicant that support the same, and any possible observations of a third party.

European Patent

Starting on 1 March 2015, anyone filing a European patent application on or after 1 March 2015 will be able to request  validation  for Morocco after the payment of the validation fee. 

Validation for Morocco is governed by the entry into force of the new law 23.13 that has modified and supplemented Law 17.97. 

European applications and patents validated for Morocco will have the same legal effect as national patents in Morocco and will be subject to the Moroccan Patent law, taking into consideration any priority right obtained in Morocco based on a patent request or patent.

Validation for Morocco occurs when an applicant files a request of validation at the validation office (European Patent Office) and when the applicant pays a validation fee  of EURO 240.   Refunding of the validation fee is not possible. 

The said fees must be paid to the validation office within a period of six months as of the date on which the European Patent Bulletin mentions the publication of the European search report or, where applicable within the period for performing the acts required for an international applications entry into the European Phase.

In case of expiry of the above time limit, the validation fee can still be paid within a two month grace period, by paying an extra fee. 

Besides, in order to benefit from the protection as mentioned above, the owner of the patent or its agent must file a request of protection in Arabic or in French and should pay the official fees at the Moroccan PTO within a deadline of 3 months starting as of the publication of the patent as delivered. 

by the validation office.  In case of expiry of the above time limit, a two month grace period will be provided to the applicant to regularize the filing request. 

The validated European Patent shall be void, in case the official fees are not paid or the claims are not filed on their due date. 

The official fees must be paid each year after the issuance of the patent to maintain the patent before the Moroccan PTO.  

The Moroccan PTO will publish  the requests of the validation and any modification of the validated European Patent occurred after the validation of the Patent in Morocco, by the end of the period of 18 months as from the filing date or as of the eldest priority date, if applicable and after that the validation office confirms the payment of the official fees. 

However, the protection will be void in case the request of validation is withdrawn, is considered as withdrawn or the patent application is rejected by the validation office.  Moreover, if the patent is cancelled via a procedure before the validation office then the protection of the same shall be null in Morocco. 

It should be taken into account that the detailed filing procedure for validation of European patent/application for Morocco is not settled yet by the Moroccan PTO. 

The definitive procedure for validation of European patent/application for Morocco is not fixed yet by the Moroccan PTO.

Exclusive right 

The rights afforded by a patent shall not extend among others, to studies and experiments that are necessary for obtaining a license/authorization for marketing a drug in addition to pursued with these experiments and studies.

Payment procedure

Annuities must be paid each year after the issuance of the patent to the body responsible for industrial property for maintaining the rights afforded by a patent. 

3.INDUSTRIAL DESIGN OR MODEL

Requirements and conditions of an industrial design or model

An industrial design or model shall be deemed new, serious and specific, if the overall impression it produces in the eyes of the expert, is not the same as another industrial design or model which already has been made available to the public prior to the date of its filing or, if appropriate, prior to a validly claimed priority date.

Claiming ownership

Any person who believes he has a right in the industrial design or model may claim ownership by legal proceedings, within three years, except where the applicant has acted in bad faith, the deadline of prescription shall not apply.

Filing procedure

A design can nowadays be filed electronically with the body responsible for industrial property according to the conditions and formalities specified by decree. In this case, the filing date is considered the date on when the body responsible for industrial property receives the filing.

One deposit may include up to 100 industrial designs, it is increased from 50 to 100, on the condition that those industrial designs or models are of the same category as under the Locarno Convention.

The industrial design or model file shall comprise as of the date of fling a graphic or photographic reproduction in two copies (instead of three) of the industrial design or models and a list of the graphic or photographic reproductions. 

Divisional application of Industrial design or model

New provisions under the current law make it possible to either divide or limit the initial application before the registration of an industrial design or model and after paying the official fees. The date of the divided application remains the same as the original filing date of the initial application, and of the priority date if any, and must be subject to the same conditions and procedures. It is not possible to register the divisional application in case the divided application does not correspond with the design or model of the initial application.

Retrieval of an industrial design or model

An application of an industrial design or model can be rejected by the PTO in part and not only as a whole.  

A filing will be considered retrieved in case the filing is not regularized within a period of three months as from the date of deposit. 

The applicant or his agent (holding a specific power) may nowadays retrieve the application of the industrial design or model in whole or in part, starting from the filing date and before the date of registration by submitting a written request. Unless:

(A) In case the design or model is mortgaged and is registered in the National Industrial Design and Models Register. In order to allow the retrieval of the application the same must be removed from the National Register.

(B) There is a co-ownership of an industrial design or model.  In order to allow the retrieval of the application all co-owners must sign the request of retrieval.

Duration of protection of an industrial design or model

The exclusive right of exploitation attaching to a protected industrial design or model under this new law shall expire at the end of a maximum period of 25 years as from the date of the initial filing date. Before the amendment of the Law the duration of protection was 15 years. The registration of an industrial design or model shall have effect for five years as from the deposit date. It may be renewed on request of the owner or his agent (holding a power) by proofing the payment of the official fees for four consecutive periods of five years and it is necessary to renew the registration within a 6 month period before the end of its validity.

Publication procedure of an Industrial Design or Model

The industrial design or model will be published within a period of 6 months starting as of the date of registration and will be determined by decree. It is now possible for the applicant to delay the publication of its design or model for a period that not exceeds a period of 18 months. The delay of the publication applies for the application as a whole and it will be published at the end of the above mentioned 18 months. It is possible for the applicant to request the immediate publication of the industrial design or model during the above mentioned 18 months. The body responsible for industrial property keeps the content of the application secret until the publication.

Exclusive rights

In the exceptions of the rights of the owner of an industrial model or design to prevent third parties from using the same right, the third party using it in good faith could not assign them without the company/corporation/agreement related to.


4.TRADE MARK AND SERVICES MARK

Divisional Application procedure

An applicant or his agent may divide the initial application before the registration of the trademark and after payment of the official fees. The divided application shall maintain the initial filing date or the priority date, if applicable, and shall be subject to the same conditions and formalities. The divided application could contain only the same goods and services of the initial filing application. However, it is not possible to divide the application for the goods and services that are opposed or rejected.

Retrieval Procedure

The applicant or his agent (holding a specific power) may retrieve the application before the registration of the trademark in whole or in part except not:

- (A) In case the trademark is mortgaged and is registered in the National Register of Marks. In order to allow the retrieval of the application the same must be removed from the National official Gazette by a written request of the owner of the mortgage.

- (B) In case of co-ownership of the trademark.  In order to allow the retrieval of the application all co-owners must sign the request of retrieval.

The retrieval of the application should be registered at the National Trademark Register of Marks.

Examination/objections

According to this new law, the PTO is entitled to perform substantive examination of the trademark application based on absolute grounds; this means that a trademark is eligible for protection if it meets the formal requirement of representation, but also distinctiveness, not being deceptive, generic and descriptive.

Also, third parties will be allowed to object on trademark application based on absolute grounds.

Opposition Procedure

The Moroccan PTO performs with the entry of the new law substantive examination based on formal requirements and absolute grounds. The PTO does not examine conflicts with prior identical or similar trademarks. In this case, certain issues that are not examined by the Office can be raised within the framework of opposition proceedings.  The opposition procedure provides the opportunity to third parties to object the trademark application on relative grounds.  It should be taken into account that in Morocco only persons that are legally permitted to represent third parties (attorney at Law) and IP attorneys as mentioned in the list of IP attorneys are authorized to act in the opposition procedure.  The opposition procedure in Morocco is as follows:

-Within a period of two months from the publication of the application for the registration of a mark, opposition to this application may be initiated with the body in charge of industrial protection by the owner of a mark protected or registered prior to the said application or enjoying a previous priority date, or by the proprietor of a pre-existing well-known mark within the meaning of article 6bis of the Paris Convention for the Protection of Industrial Property, or by the holder/applicant of a protected geographical indication or appellation of origin.

-In case of an international trademark the 2 months period of the opposition procedure starts as of the first day of the next month of the publication date of the international gazette in the national gazette. 

-The opposition will be notified at once to the holder of the application for registration or where relevant to his representative.  The applicant must respond on the opposition within a period of 2 months. The body responsible of industrial property will issue a decision if the applicant of the trademark does not respond within that period. 

-In case the applicant of the trademark respond within the period of 2 months, the opponent may respond thereon within a period of one month starting from the date of notification of the applicants reply and once again the applicant may respond thereon within a period of one month starting as from the date of the notification of the opponents reply. Any answer or observation that shall be referred to the body in charge of industrial property from one of the parties shall be notified to the parties without delay. 

-The said body shall establish a provisional decision on the basis of the opposition and the observations in the reply within a period not exceeding six months, as of the end of the two month publication period to file an opposition. However, it is possible to extend the opposition procedure by three additional months based on a justified request by one of the parties under acceptance of the said body. In that case, an one month period is provided to the parties to submit their observations starting from the notification of the decision of extension. Once again, in case one of the parties submits their 

-observations, the other party will have one month to reply to the same, starting as of the date of the notification.

-It should be taken into account that the initial period of six months referred above shall be suspended, in case the opposition is based upon a trademark application, in case of a cancellation action, nullity action or an assign-back action. The same period will also be suspended in case there is a joint request submitted by the parties to the body in charge of industrial property. In this situation the suspension cannot exceed six months as from the filing date of that joint request. 

-The opposition procedure will be considered closed based on a decision of the body responsible of industrial property in one of the following cases.

I.In case the opposition is retrieved by the opponent or in case the opponent lost its quality. 

II.In case the parties agrees to end the opposition procedure.

III.In case the trademark application is withdrawn or in case of rejection of the trademark application.

IV.In case the opponent does not have a prior right to base the opposition procedure.

-The body responsible of industrial property issues a decision based on the opposition and exchanges of the parties and notifies that decision to the parties for contestation. The provisional decision can be contested within a period of 15 days starting as of the date of notification. If no contestation is filed, the provisional decision becomes a final decision. 

-Remedies initiated against the decision of the body in charge of industrial property, shall fall within the competence of the Commercial Court of Appeal of Casablanca.

-The decision of the trademark office can be appealed before the Commercial Court of Appeal. 

Transfer and Loss of rights

The rights under a registered or a filed mark may be transferred in whole or in part.

Sealed envelope procedure

Any person, who would like to obtain a sealed envelope to ascertain the date of the creation, may file a request at the body responsible for industrial property. The request of a sealed envelope provides the applicant a priority right valid for five years starting as of the date of the filing.

Boarder Measures

The customs administration could now also request any other information and fees that could be necessary for the examination of the request of the proprietor to suspend the free circulation of goods suspected of being infringing goods. This may also be applied to geographical indications or indications of origin. 

The customs are now also allowed to stop suspected goods for importation, exportation or in transit.


Public proceedings

In case there is already a tort action, nullity action, assign-back or cancellation action against the defendant in process, the criminal court may only act after issuance of a final judgment of the court in those cases.  The new law cancelled the following provision: “The exceptions presented by the defendant concerning nullity of the industrial property title or issues relating to ownership of such title may not be raised before the criminal court”.


Recordals/Licensing

Any licensing or change of the name, address or ownership could be effected on a trademark application / registration.

Address:

ESPACE PORTE D’ANFA, No. 3 Rue Bab Mansour Casablanca 20050, Kingdom of Morocco

P.O. Box: 19005 Casa El Hank, Kingdom of Morocco
Telephone: (00 212-5-22) 36 61 19/21/26
Fax: (00 212-5-22) 36 61 33
Email: morocco@agip.com
Contact: Fatimah El-Garwaoui (Ms.)

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